Wiluna Holdings, LLC v. HERMANN HOCHMAYER
Claim Number: FA1806001793173
Complainant is Wiluna Holdings, LLC (“Complainant”), represented by John O’Malley of Volpe and Koenig, P.C., Pennsylvania, USA . Respondent is HERMANN HOCHMAYER (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <dlips4sale.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 21, 2018; the Forum received payment on June 21, 2018.
On June 22, 2018, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <dlips4sale.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 25, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 16, 2018 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@dlips4sale.com. Also on June 25, 2018, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 17, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant is the owner and operator of the website, <clips4sale.com>, which features adult-entertainment oriented media. Complainant has rights in the CLIPS4SALE.COM mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,508,680, registered Sep. 30, 2008).
2. Respondent’s <dlips4sale.com>[i] domain name is confusingly similar to Complainant’s CLIPS4SALE.COM mark as Respondent replaces the letter “c” with a “d.”
3. Respondent has no rights or legitimate interests in the <dlips4sale.com> domain name. Respondent is not licensed or otherwise authorized to use Complainant’s CLIPS4SALE.COM mark and is not commonly known by the domain name.
4. Additionally, Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to redirect users to the <adultshoots.com> domain name, which Respondent unjustly profits from user confusion.
5. Respondent registered and uses the <dlips4sale.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the resolving website of the domain name which generates click-through revenue. Further, Respondent registration of the confusingly similar domain name indicates Respondent engages in typosquatting.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the CLIPS4SALE.COM mark. Respondent’s domain name is confusingly similar to Complainant’s CLIPS4SALE.COM mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <dlips4sale.com> domain name and that Respondent registered and uses the domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant has rights in the CLIPS4SALE.COM mark through its trademark registrations with the USPTO. Registering a mark with the USPTO is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Complainant provides a copy of its USPTO registration for the CLIPS4SALE.COM mark (e.g., Reg. No. 3,508,680, registered Sep. 30, 2008). Therefore, the Panel finds Complainant has sufficiently demonstrated rights in the CLIPS4SALE.COM mark per Policy ¶ 4(a)(i).
Next, Complainant contends Respondent’s <dlips4sale.com> domain name is confusingly similar to Complainant’s CLIPS4SALE.COM mark. Specifically, Respondent misspells Complainant’s mark. Respondent replaces the letter “c” with a “d” in Complainant’s CLIPS4SALE.COM mark. Misspelling of a complainant’s mark, either by adding or removing a letter, does not mitigate any confusing similarity between the domain name and mark under Policy ¶ 4(a)(i). See OpenTable, Inc. v. Above.com Domain Privacy, FA 1626187 (Forum Aug. 10, 2015 (“Respondent’s <oipentable.com> domain name is confusingly similar to the OPENTABLE mark under Policy ¶ 4(a)(i) because the disputed domain merely adds the letter ‘i’ . . . ”). Thus, the Panel holds Respondent’s domain name is confusingly similar to Complainant’s CLIPS4SALE.COM mark per Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <dlips4sale.com> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant asserts Respondent has no rights or legitimate interests in the <dlips4sale.com> domain name. Specifically, Complainant contends Respondent is not licensed or authorized to use Complainant’s CLIPS4SALE.COM mark and is not commonly known by the domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Complainant provides a copy of the WHOIS information which identifies Respondent as “HERMANN HOCHMAYER.” Therefore, Respondent is not commonly known by the <dlips4sale.com> domain name per Policy ¶ 4(c)(ii).
Further, Complainant claims Respondent fails to use the <dlips4sale.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, Complainant has shown that Respondent uses the domain name to redirect users to a third party website and generate click-through revenue. Use of a domain name containing a mark to which a complainant has rights to redirect users to generate click-through fees is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”). Complainant provides a screenshot of the domain name’s resolving website which is a “Biz Casting” website in which users can sign up to join an adult-oriented community. Therefore, the Panel agrees with Complainant and finds Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii)
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims Respondent registered and uses the <dlips4sale.com> domain name in bad faith. Specifically, Complainant argues Respondent use of the domain name to generate click through fees disrupts Complainant’s business and attempts to attract users for commercial gain. Use of a domain name that is confusingly similar to a mark in which a complainant has rights to generate revenue through click-through fees indicates bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). The Panel agrees with Complainant and holds that Respondent registered and uses the <dlips4sale.com> domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Furthermore, Complainant alleges Respondent’s registration of the <dlips4sale.com> domain name demonstrates typosquatting. Registration of a domain name which only differs from a complainant’s mark by one letter may indicate bad faith per Policy ¶ 4(a)(iii). See Webster Financial Corporation and Webster Bank, National Association v. IS / ICS INC, FA 16070016833 (Forum Aug. 11, 2016) (“Typosquatting is a practice whereby a domain name registrant, such as Respondent, deliberately introduces typographical errors or misspellings into a trademark and then uses the string in a domain name.”). As noted, Respondent’s domain name only differs from the CLIPS4SALE.COM mark by one letter (replacing the letter “c” with a “d”). Therefore, the Panel holds Respondent does engage in typosquatting, and thus registered and uses the <dlips4sale.com> domain name in bad faith under Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <dlips4sale.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 24, 2018
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page